Elva Chuang
The Intellectual Property Court rendered the 108-Min-Kong-Shang-2 Decision of July 1, 2019 (hereinafter, the “Decision”), holding that the infringement of a company’s right of name is not limited to the use of the same name, and lawful registration cannot be asserted as a defense for disputes over similar company names.
According to the facts underlying this Decision, the Appellant is Firm A, which was established on December 7, 2015 and for which several “OO” trademarks (hereinafter collectively, the “Trademarks”) were applied and registered. In addition, the Appellant had used the Trademarks for commercial activities before they were registered. The Appellee was incorporated with “OO Food International Limited” as the company name on April 15, 2016, and there is a competitive relationship between the Appellee and the Appellant. The Appellant’s company name and the Appellant’s trade name and the Trademarks have an identical or highly similar structure, and the goods and services of the parties are identical or highly similar. Therefore, the Appellant believed that the Appellee’s behavior constitutes a free ride on the goodwill of another person, giving the misconception that the two have the same source or are associated to a certain extent in order to promote the Appellee’s own goods or services and thus constituting an obviously unfair act sufficient to affect trading order under Article 25 of the Fair Trade Law. In addition, the Appellee infringed the Appellant’s right of name and publicity right. Therefore, this action was brought in accordance with Articles 29 of the Fair Trade Law and Articles 18 and 19 of the Civil Code.
According to this Decision, the review of whether company names are identical by an administrative agency does not cover similarity. According to the legislative reasons for Article 18, Paragraph 1 of the Company Law as amended on November 12, 2011, unfair competition and infringement upon the right of name should still be handled in accordance with relevant provisions of the Fair Trade Law and the Civil Code and are different matters from the right to use a name granted by an administrative agency. The consideration of whether an infringement upon a company’s right of name is involved is not limited to the use of the same name. If the names are similar to the extent that ordinary people who take ordinary caution are likely to be confused, such similar names should be included in the consideration. Therefore, whether a lawful incorporation registration is made cannot be asserted as a defense that another person’s right of name is not infringed against disputes over similar names of two companies.
It was further pointed out in this Decision that since the Appellant’s trade name and the Appellee’s company name both contain the “OO” portion and the business as operated is also the same, it is difficult to tell that they are different entities. When typical consumers seek to purchase the Appellant’s products on the Internet, they may be confused into purchasing products from the Appellee. The scale of the potential impact is difficult to assess. Therefore, potential trading counterparts may make a choice favorable to the Appellee in terms of the overall trading order. Since this undermines the free competition between enterprises, results in unbalanced distribution of benefits and undermines efficiency competition in the market, this is certainly an obviously unfair act that steals the fruit of labor from others and undermines trading order. Therefore, the Appellee’s use of Firm A’s trademarks as its company name violates Article 25 of the Fair Trade Law.